RESOLVING INTELLECTUAL PROPERTY DISPUTES THROUGH MEDIATION

WHY CHOOSE MEDIATION FOR YOUR IP DISPUTE

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Advantages of mediation

  • Neutral facilitator with expertise in relevant field
  • One proceeding and venue can resolve multiple issues spanning several jurisdictions
  • Generally shorter timelines and lower cost than litigation
  • Parties have a high degree of control over most aspects of the process, including procedure
  • Proceedings are confidential, so sensitive information and outcome can remain confidential
  • Settlement agreements are generally enforceable in most jurisdictions
  • Availability of settlement terms including creative commercial solutions that are beyond jurisdiction of court
  • Limited appeal options so outcome has finality
  • Preservation or development of ongoing relationship between parties

Success rate for mediation of IP matters

  • People involved in mediation of IP disputes over the last 5 to 10 years have indicated that mediation has been successful in at least 60% to 70% of the cases. This includes both court mandated and voluntary mediation.
  • If "success" is defined as including better identification of, simplifying or reducing the issues in a dispute, then it can be said that MOST mediations are successful.

Factors that may make a matter suitable for mediation

  • Litigation costs will likely be disproportionate to award amount
  • Parties are involved in multiple actions and desire a single settlement
  • Issues are highly technical, complex or fact-based and may be better decided by an expert in the field
  • Existing negotiations are deadlocked
  • Parties want sensitive information and outcome to remain confidential
  • The parties have a successful business relationship they prefer to maintain (e.g. licensee/licensor, ongoing business relationship etc)
  • The subject matter or scale of the dispute is not worth the expense and inconvenience of litigation

Why choose an IP Neutral instead of a judge or other court official without a fee?

  • A court official is only available to the parties once litigation is commenced. Often, mediation is a preferable alternative before the expense, entrenched positions and public disclosure of litigation.
  • The Trade-mark Opposition Board does not offer mediation for trade-mark oppositions or non-use proceedings.
  • A privately appointed mediator selected by the parties will reflect their mutual choice of an individual with the qualifications, personality and style most suitable to the parties.
  • Compared to a court appointed official, a privately appointed mediator selected by the parties may have more:
    • relevant intellectual property expertise
    • industry or technology expertise relevant to a patent or other technology dispute
    • relevant mediation experience
    • training and/or experience in considering a broader range of issues outside those related to the litigation.

Why not negotiate ourselves?

  • Typically, when parties are involved in a dispute, each party has a stake in the outcome. Parties often get locked into positions, insisting on receiving everything they want and refusing to make meaningful concessions. Each party tries to bargain from a position of strength, resulting in an impasse.
  • Parties typically look at success from a three-part paradigm. The top of the paradigm is power (who has more), followed by rights (who believes their rights are paramount to the other side's) and interests (there may be common interests, but this is low on the paradigm model in terms of leverage in settlement).
  • In fact, an effective system of negotiation should be the other way, where interests are the paramount factor followed by rights and power.
  • Additionally, parties themselves may not truly understand the legitimacy of their position on rights and power and their legal position, based on the facts of any case. An impartial, experienced IP practitioner to assist in negotiations can overcome some of the roadblocks.

Does the party who first suggests mediation or arbitration give an appearance of weakness to the other side?

  • NO.
    • Mediation or arbitration and other non-litigious alternative dispute resolution approaches are now generally understood to be acceptable methods to resolve disputes.
    • Many Fortune 500 companies and other businesses have pledged to attempt to resolve disputes by mediation or other alternative dispute resolution procedures prior to, or shortly after, commencing litigation.
    • Most disputes are resolved by settlement.
    • A party's lawyer, patent or trade-mark agent or other intellectual property professional should, in almost every dispute, at least consider mediation and other alternative dispute resolution procedures on behalf of a client.

Cost of Mediation or Arbitration

A mediation or arbitration will cost a fraction of what it would cost for a trial. Expenses will include the following:

  • Counsel fee for preparing briefs
  • Counsel fee for appearing at mediation or hearing
  • Counsel fee for settling terms of agreement reached at mediation or rendering decision in arbitration
  • Neutral's fee disbursements for meeting room and related expenses if required.
  • Disbursements for meeting room and related expenses if required

RECENT UPDATE

IP Neutrals of Canada congratulates Justice Michael Manson on his recent appointment to the Federal Court of Canada, Trial Division. Justice Manson is a founding member of IP Neutrals of Canada, and his insights and dedication to the advancement of ADR have been invaluable.

IP Neutrals also is pleased to announce that Steven Z. Raber of Fillmore Riley LLP, Winnipeg, has been appointed as a member of IP Neutrals of Canada.

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